Benihana of Tokoyo, Inc. v. Benihana, Inc.

828 F. Supp. 2d 720, 2011 U.S. Dist. LEXIS 143024, 2011 WL 6187098
CourtDistrict Court, D. Delaware
DecidedDecember 13, 2011
DocketCiv. No. 10-1051-SLR
StatusPublished
Cited by9 cases

This text of 828 F. Supp. 2d 720 (Benihana of Tokoyo, Inc. v. Benihana, Inc.) is published on Counsel Stack Legal Research, covering District Court, D. Delaware primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Benihana of Tokoyo, Inc. v. Benihana, Inc., 828 F. Supp. 2d 720, 2011 U.S. Dist. LEXIS 143024, 2011 WL 6187098 (D. Del. 2011).

Opinion

MEMORANDUM OPINION

SUE L. ROBINSON, District Judge.

I. INTRODUCTION

- On December 3, 2010, Benihana of Tokyo, Inc. (“plaintiff’ or “BOT”) filed this complaint comprising six causes of action (“claims”): (1) breach of contract; (2) specific performance; (3) conversion; (4) false designation of origin; (5) trademark infringement; and (6) declaratory judgment. (D.I. 1 at 6-12) Plaintiff amended its complaint on December 7, 2010 (“amended complaint”). (D.I. 6) On February 4, 2011, defendants Benihana, Inc. (“Bl”) and Noodle Time, Inc. (“Noodle Time,” collectively “defendants”) filed a motion to dismiss plaintiffs amended complaint pursuant to Federal Rule of Civil Procedure (“Rule”) 12(b)(6). (D.I. 11) In lieu of a responsive brief, plaintiff filed a motion to strike/exclude (D.I. 15), which the court granted-in-part and denied-in-part. (D.I. 25) Presently before the court is defendants’ renewed motion to dismiss (D.I. 11) pursuant to Rule 12(b)(6). This court has jurisdiction under 28 U.S.C. § 1331, 1332 and 1338.

II. BACKGROUND

Plaintiff is a New York corporation with a principal place of business in New York, New York. (D.I. 6 at ¶ 1) Defendant Bl is a Delaware corporation and defendant Noodle Time is a Florida corporation. (Id. at ¶¶ 2, 3) Both defendants have a principal place of business at the same address in Miami, Florida. (Id.) Noodle Time is a subsidiary of Bl. (Id.)

BOT was founded by Rocky Aoki (“Aoki”) in 1963 and opened its first Japanese teppanyaki steakhouse called “Benihana” in New York. (D.I. 6 at 2 ¶ 6; D.I. 12 at 2). The concept proved popular; by [723]*7231972 BOT owned, operated or licensed approximately 18 restaurants grossing $12 million. (D.I. 12 at 2) Several years later, Aoki formed Benihana National Corporation (“BNC”), taking the company public to raise capital. (Id.) Aoki served as chairman of both BNC and privately-held BOT, retaining 51% of BNC’s common stock and keeping about 30 restaurants in BOT. (Id.) Later, BNC announced that it would acquire BOT’s operations in the United States and rights to BOT’s trademarks. (Id.) Defendant Bl was formed, then acquired BNC in a 1995 merger transaction (“1995 transaction”). (Id.) Aoki continued to serve as chairman of Bl. (Id.) The 1995 transaction was governed by the “Amended and Restated Agreement and Plan of Reorganization” (“ARA”). (D.I. 6 at ¶ 8; D.I. 12 at 2; D.I. 13, ex. 1)

The ARA provided for the sale, transfer and assignment of certain restaurants listed on Schedule A of the ARA, and all related assets, from BOT to Bl (or to a wholly-owned subsidiary of Bl). (D.I. 13, ex. 1 § 1.01) This included the trademarks and servicemarks listed on Schedule 1.01(d) (“Trademarks”) “to the extent applicable to the United States (including its territories and possessions), Central America, South America and the islands of the Caribbean sea” (“Territory”). (Id.) Among the Trademarks listed on schedule 1.01(d) were the text “BENIHANA” (“the BENIHANA trademark”) and a “flower design.”1 (D.I. 13, ex. 1, Schedule L01(d)) Section 7.10 of the ARA further provided that

[Bl] will own the Trademarks in the Territory and BOT will continue to own the Trademarks outside of the Territory. Accordingly, each of BOT and Benihana agree that, without the prior written consent of the other, neither will make any use of the Trademarks which could reasonably be expected to reduce the value or usefulness of the Trademarks to the other party. In addition, each of BOT and [Bl] shall be responsible for the proper registration and maintenance of the Trademarks and the prosecution of infringements or potential infringements of the Trademarks in the territories where such party has an interest in the Trademarks.... The obligations of this Section shall survive the Closing for an indefinite period.

(D.I. 13, ex. 1 at § 7.10)

On or about April 23, 2010, defendants initiated an application for international registration (“registration”) of the BENIHANA trademark with the World Intellectual Property Organization (“WIPO”).2 (D.I. 6 at ¶ 15; D.I. 27, ex. 7) This application was assigned Registration No. 1048205 and sought protection in the countries of Iceland, Iran, Monaco, Singapore, Ukraine, Vietnam and Zambia (“disputed countries”) as well as Cuba. (Id. at ¶¶ 15, 18)

In response, plaintiff filed this suit, in December 2010, alleging that defendants’ application for trademark protection in the disputed countries was a breach of the ARA. (D.I. 1) In February 2011, defendant Noodle Time filed a “Request for the Recording of a Renunciation” (“renunciation”) with WIPO, renouncing registration of the [724]*724BENIHANA trademark in the disputed countries, but not in Cuba. (D.I. 13, ex. 3)

III. STANDARD OF REVIEW

In reviewing a motion filed under Rule 12(b)(6), the court must accept all factual allegations in a complaint as true and take them in the light most favorable to plaintiff. See Erickson v. Pardus, 551 U.S. 89, 94, 127 S.Ct. 2197, 167 L.Ed.2d 1081 (2007); Christopher v. Harbury, 536 U.S. 403, 406, 122 S.Ct. 2179, 153 L.Ed.2d 413 (2002). A court may consider the pleadings, public record, orders, exhibits attached to the complaint, and documents incorporated into the complaint by reference. Tellabs, Inc. v. Makor Issues & Rights, Ltd., 551 U.S. 308, 322, 127 S.Ct. 2499, 168 L.Ed.2d 179 (2007); Oshiver v. Levin, Fishbein, Sedran & Berman, 38 F.3d 1380, 1384-85 n. 2 (3d Cir.1994). A complaint must contain “a short and plain statement of the claim showing that the pleader is entitled to relief, in order to give the defendant fair notice of what the ... claim is and the grounds upon which it rests.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 545, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) (interpreting Fed.R.Civ.P. 8(a)) (internal quotations omitted). A complaint does not need detailed factual allegations; however, “a plaintiffs obligation to provide the ‘grounds’ of his entitle[ment] to relief requires more than labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do.” Id. at 545, 127 S.Ct. 1955 (alteration in original) (citation omitted). The “[flactual allegations must be enough to raise a right to relief above the speculative level on the assumption that all of the complaint’s allegations are true.” Id. Furthermore, “[w]hen there are well-ple[d] factual allegations, a court should assume their veracity and then determine whether they plausibly give rise to an entitlement to relief.” Ashcroft v. Iqbal, 556 U.S. 662, 129 S.Ct.

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828 F. Supp. 2d 720, 2011 U.S. Dist. LEXIS 143024, 2011 WL 6187098, Counsel Stack Legal Research, https://law.counselstack.com/opinion/benihana-of-tokoyo-inc-v-benihana-inc-ded-2011.